カテゴリー: Abbreviation

Coffee Trademark Battle

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Colombian Coffee Federation (FNC) failed a fight for invalidation of Japanese TM Registration no. 5901554 for word mark “EMERALD” in class 30 owned by The Coca-Cola Company, one of the world’s largest beverage company in the US.
[Invalidation case no. 2018-890017, Gazette issued date: August 28, 2020]

EMERALD MOUNTAIN

Emerald Mountain is a top brand name of Colombian coffee approved by FNC (NGO organization, the union of coffee producer established in 1927 joining over 560,000 members for enhancing quality, production, and export) guaranteed hand-picked and hand-screened beans of which quantity is only 3 –1% of the total production of Colombia coffee beans.

The FNC owns several trademark registrations for “EMERALD MOUNTAIN” in Japan.

In the early 90s, Emerald Mountain began to be sold by Coca-Cola as canned liquid coffee under the Georgia brand in thousands of vending machines across Japan. Since 1997 it has become the most sold coffee in Japanese history as well as the #1 beverage sold by Coca-Cola in Japan. Every can of Georgia Emerald Mountain coffee has an explanation of the Colombian origin of the coffee as well as the high-quality certification of the FNCS. With annual sales of more than 630 million cans, Georgia Emerald Mountain Blend is undoubtedly Emerald Mountain’s leading product within the Japanese market.

EMERALD

Irrespective of a long-standing relationship, The Coca Cola Company, in 2011, sought registration for a wordmark “EMERALD” over artificial coffee, coffee-based beverages, prepared coffee and cocoa, tea, ice in class 30 which confronted with a severe objection from FNC.

FNC was successful in removing the registration by means of a non-use cancellation in 2017. However, The Coca Cola Company deliberately filed a new trademark application for the same mark in 2015 immediately when the registered mark was vulnerable for cancellation on grounds of non-use. The JPO allowed registration of the new application in December 2016.

To contend, FNC filed an invalidation action against the EMERALD mark in March 2018.

Invalidation petition by FNC

FNC argued the EMERALD mark shall be invalidated in contravention of Article 4(1)(vii), (x), (xi), (xv), and (xix) of the Trademark Law by stating that “EMERALD MOUNTAIN” has acquired substantial reputation and popularity as an indicator of high-quality Columbian coffee as a result of continuous sales promotion in Japan since 1970. In the coffee industry, coffee beans grown in highland are often named with the term “MOUNTAIN”, e.g. “BLUE MOUNTAIN”, “CRYSTAL MOUNTAIN”, “CARRIBERAN MOUNTAIN”, “CORAL MOUNTAIN”. In this respect, “EMERALD” shall play a prominent role in “EMERALD MOUNTAIN”. If so, both marks are deemed similar and it is likely that relevant consumers confuse or associate artificial coffee, coffee-based beverages, prepared coffee and cocoa, tea, ice bearing the EMERALD mark with “EMERALD MOUNTAIN”.

Besides, The Coca Cola Company has been using “EMERALD MOUNTAIN” on canned-liquid coffee under license from FNC. Presumably, the disputed mark was filed in anticipation of non-use cancellation claimed by FNC. In the cancellation proceeding, The Coca-Cola Company did neither answer nor respond. These facts clearly show the disputed mark was filed just to avoid cancellation even if The Coca-Cola Company had no intention to use it. It is really annoyance and free-riding on the famous marks with a fraudulent intention.

JPO decision

From the totality of evidence and circumstances, the JPO admitted a high degree of reputation and popularity of EMERALD MOUNTAIN as a source indicator of FNC’s high-quality Columbian coffee beans. In the meantime, the JPO questioned if relevant consumers connect the term “EMERALD” with FNC when used on coffee since the evidence did not disclose EMERALD MOUNTAIN is actually abbreviated to “EMERALD” in commerce. Likewise, it is suspicious whether “BLUE MOUNTAIN”, “CRYSTAL MOUNTAIN”, “CARRIBERAN MOUNTAIN”, “CORAL MOUNTAIN” are recognized with its short name, namely, “BLUE”, “CRYSTAL”, “CARRIBEAN”, “CORAL”.

In assessing the similarity of the mark, the JPO found “EMERALD MOUNTAIN” and “EMERALD” are dissimilar from visual, phonetic, and conceptual points of view. Given both marks are distinctively dissimilar, it is unlikely to find a likelihood of confusion in connection with the goods in dispute.

Even if The Coca-Cola Company filed the disputed mark with an intention to avoid the non-use cancellation, it would be anything but punishable in view of dissimilarity between marks. Besides, from the produced evidence, the JPO was unable to find fraudulent intention by Coca Cola to be blamed for invalidation.

Based on the foregoing, the JPO decided to dismiss the invalidation action.

POLO RALPH LAUREN vs. US POLO ASSN

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The Appeal Board of the Japan Patent Office (JPO) affirmed Examiner’s refusal to register the wordmark “U.S. POLO ASSN.” due to similarity to and a likelihood of confusion with earlier registered mark “POLO” owned by The Polo/Lauren Company, L.P.
[Appeal case no. 2018-5222, Gazette issued date: July 31, 2020]

“U.S. POLO ASSN.”

United States POLO Association filed a trademark registration for wordmark “U.S. POLO ASSN.” in standard character on January 13, 2016, over various kinds of bags, leather products, and other goods in class 18. [TM application no. 2016-3277]

On January 12, 2018, the JPO Examiner rejected the applied mark in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law on the grounds that “U.S. POLO ASSN.” contains a term “POLO” which has become famous as a source indicator of The Polo/Lauren Company, L.P in connection with clothing and home décor. Relevant consumers with ordinary care would conceive the term as a prominent portion of the applied mark. If so, both marks shall be deemed similar or likely to cause confusion when used on the goods in question.

Article 4(1)(xi) is a provision to prohibit from registering a junior mark that is deemed identical with, or similar to, any senior registered mark.

Article 4(1)(xv) is a provision to prohibit any mark from being registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and users’ benefits.

U.S. POLO ASSN filed an appeal against Examiner’s refusal on April 16, 2018.

JPO decision

JPO admitted a high degree of reputation and popularity of “POLO” as a source indicator of The Polo/Lauren Company, L.P in connection with clothing as well as bags based on following fact-findings.

  1. American company Polo Ralph Lauren was founded in 1967 in New-York by fashion designer Ralph Lauren. The 1980s and 90s saw massive expansion for the Ralph Lauren brand and it became a worldwide phenomenon.
  2. “POLO” appears with definitions of ‘trademark of US designer, Ralph Lauren’ and ‘leather products designed by Ralph Lauren’ in some dictionaries which clearly demonstrate “POLO” is known as an abbreviation of ‘POLO RALPH LAUREN’.
  3. “POLO” has been substantially used adjacent to “RAPLH LAUREN” on various goods and frequently advertised as a famous brand of RALPH LAUREN in the media.
  4. A customer survey conducted in January 2010 from 900 adults age 20 years and older revealed that RALPH LAUREN has ranked 3rd-most popular brand in clothing after Burberry and UNIQLO.
  5. Annual sales exceed USD4,800 million in 2008, USD7,450 in 2013.

The Board found the applied mark “U.S. POLO ASSN.” shall be seen as a composite mark consisting of “U.S.”, “POLO” and “ASSN.” Since the last word “ASSN.” is too unfamiliar to average Japanese consumers to see it as an abbreviation of ‘association’, the applied mark would not give rise to any specific meaning as a whole. Besides, its pronunciation ‘ˌjuː.es poʊ.loʊ eɪeɪesén’ sounds redundant. Even if the second word “POLO” means ‘a game played on horseback by two teams of four players each’, given a high reputation of the word as a source indicator or an abbreviation of ‘POLO RALPH LAUREN’ the Board can’t overlook the fact that it has the same spelling as RALPH LAUREN’s famous apparel brand.

If so, relevant consumers would consider “POLO” as a prominent portion of the applied mark and it shall be permissible to compare the portion with the cited mark in assessing similarity of mark.

In this viewpoint, the applied mark would give rise to a sound of ‘poʊ.loʊ’ and the meaning of “RALPH LAUREN’s famous apparel brand”. Therefore, the applied mark shall be deemed confusingly similar to senior registered mark “POLO” owned by The Polo/Lauren Company, L.P in class 18, and others (TM Registration no. 4040052, 4931614, and 4931615).

Based on the foregoing, the Board found that Examiner didn’t error in fact-finding nor applying Article 4(1)(xi) and (xv) of the Trademark Law and decided to refuse the applied mark accordingly.

Japan IP High Court ruling: “I♡JAPAN” lacks distinctiveness as a trademark

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On June 17, 2020, the Japan IP High Court affirmed the JPO’s rejection of the “I♡JAPAN” mark in relation to various goods of class 14,16,18 and 24 due to a lack of distinctiveness.
[Judicial case no. Reiwa 1(Gyo-ke)10164]

I♡JAPAN

The disputed mark consists of the capital letter “I”, followed by a red heart symbol, below which are the capital letters “JAPAN” (see below). The mark filed by CREWZ COMPANY, a Japanese merchant on April 17, 2018, over various goods in class 14, 16, 18, and 24 [TM application no. 2018-049161].

Noticeably, the JPO already allowed trademark registration for the same mark on apparels in class 25 on March 27, 2015, filed by the applicant [TM Registration no. 5752985]. Regardless of it, the examiner refused disputed mark in contravention of Article 3(1)(vi) of the Trademark Law.

Article 3(1)(vi) is a provision to comprehensively prohibit from registering any mark lacking inherent distinctiveness.

Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:
(vi)　is in addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person.

JPO decision

The JPO Appeal Board sustained the examiner’s refusal and decided to reject disputed mark by stating that we are nowadays accustomed to finding goods bearing the “I♡” logo followed by a geographical indication, which represents a strong devotion or attachment to the area/city in its entirety. In fact, the “I♡JAPAN” design is commonly used on several goods as a symbol to support the Japanese sports team or souvenirs for tourists. If so, the design shall not be exclusively occupied by a specific entity. Under the circumstances, relevant consumers are unlikely to conceive the disputed mark as a source indicator of the applicant. Thus, the mark shall be rejected in contravention of Article 3(1)(vi) and the examiner did not error. [Appeal case no. 2018-16957]

To contend against the decision, the applicant filed an appeal to the IP High Court.

IP High Court ruling

The IP High Court dismissed the applicant’s allegation entirely, stating that the disputed mark gives rise to the meaning of “I love JAPAN”. The court found the “I♡” logo followed by a geographical indication is commonly used to appeal a strong devotion or attachment to the area/city. Inter alia, various merchants promote goods bearing the “I♡JAPAN” design as a sign of their support to Japan or the Japanese sports team. If so, relevant consumers and traders would not conceive disputed mark as a source indicator of goods in question, but merely a symbol to represent their devotion and support to Japan. Therefore, the disputed mark shall not be registrable under n contravention of Article 3(1)(vi).

Besides, the court found the fact of a precedent registration for the same mark in a different class would not affect the distinctiveness of disputed mark since it does not have a legal effect to bind subsequent examination in assessing registrability of a junior mark under Article 3(1)(vi).

Japan IP High Court sided with Apple Inc. in “CORE ML” trademark dispute

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On May 20, 2020, the Japan IP High Court denied the JPO decision and sided with Apple Inc. by finding the “CORE ML” mark is dissimilar to senior trademark registration no. 5611369 for word mark “CORE” in connection with computer software of class 9.
[Case no. Reiwa1(Gyo-ke)10151]

CORE ML

Apple Inc. filed a trademark application for word mark “CORE ML” in standard character by designating computer software in class 9 on November 6, 2017 (TM App no. 2017-145606).

Apple’s Core ML is its own framework for Machine Learning used across Apple products for performing fast prediction or inference with easy integration of pre-trained machine learning models on the edge, which allows you to perform real-time predictions of live images or video on the device.

JPO decision

The Japan Patent Office (JPO) rejected “CORE ML” in contravention of Article 4(1)(xi) of the Trademark Law due to a conflict with senior trademark registration no. 5611369 for word mark “CORE” in standard character over electronic machines, computer software, and other goods in class 9 owned by Seiko Holdings Corporation.

Article 4(1)(xi) is a provision to prohibit from registering a junior mark that is deemed identical with, or similar to, any senior registered mark.

In the decision, the JPO stated applied mark apparently consists of two words, “CORE” and “ML”. The term “CORE”, a familiar English word meaning ‘a central and foundational part’, would play a role of source indicator in connection with the goods in question. In the meantime, “ML” is a descriptive term since it is commonly used as an abbreviation of ‘Machine Learning’ in the computer software industry. If so, it is permissible to select the term “CORE” as a dominant portion of applied mark and compare it with the cited mark “CORE”.

To contend against the decision, Apple Inc. filed an appeal to the IP High Court.

IP High Court ruling

The IP High Court, at the outset, referred to the Supreme Court ruling in 2008 which established the criterion to grasp a composite mark in its entirety in the assessment of similarity of the mark.

“Where a mark in dispute is recognized as a composite mark consisting of two elements or more, it is not permissible to assess the similarity of mark simply by means of taking out an element of the composite mark and then comparing such element with the other mark, unless consumers or traders are likely to perceive the element as a dominant portion indicating its source of origin of goods/service, or remaining elements truly lack inherent distinctiveness as a source indicator in view of sound and concept.”

Based on the criteria, the court found that applied mark shall be assessed in its entirety on the following grounds:

  1. “CORE” would be merely recognized as a term to mean ‘a central and foundational part’ in connection with goods in question.
  2. It is unlikely that relevant consumers at the sight of “CORE ML” used on computer software conceive the term “ML” as an abbreviation of ‘machine learning’. If so, “ML” would not give rise to any specific meaning.
  3. The above facts suggest that “CORE” would never play a dominant role and “ML” shall not be considered less distinctive than “CORE” as a source indicator in view of the concept.
  4. From appearance and sound, there is no reasonable ground to believe “CORE” and “ML” shall be recognized individual and separable.

Based on the foregoing, the court pointed out the JPO erred in finding applied mark appropriately and decided that the applied mark “CORE ML” is deemed dissimilar to the cited mark “CORE” as a whole given the remarkable difference in sound and appearance, even if both marks resemble in concept.

JPO finds “CLUB MOET KYOTO” and “Moët & Chandon” likely to cause confusion

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The Opposition Board of the Japan Patent Office (JPO) sided with MHCS, the producer, inter alia, of the famous Moët & Chandon champagne, and decided to cancel trademark registration no. 6030384 for word mark “CLUB MOET KYOTO” due to a likelihood of confusion with “Moët & Chandon”.

CLUB MOET KYOTO

Opposed mark, a word mark “CLUB MOET KYOTO” written in standard character, was filed on November 14, 2017 by designating restaurant service of class 43 in the name of a Japanese business entity having its principal place of business at Kyoto. It appears the applicant owns hostess bar and opposed mark is actually used as a name of the bar. See here.

Immediately after filing the application, applicant requested the JPO to accelerate examination of opposed mark. In accordance with the request, the JPO rushed to a decision and admitted registration on March 23, 2018.

MHCS – OPPOSITION

MHCS, as a holder of the Japanese trademark “MOET”, sought to retroactively cancel the registration of opposed mark, on the grounds that the mark was likely to cause confusion with “Moët & Chandon” when used on restaurant service in class 43 under Article 4(1)(xv) of the Japan Trademark Law.

Likelihood of confusion is a key criteria when assessing the similarity of trademarks. To establish whether there is likelihood of confusion, the visual, phonetic and conceptual similarity will be assessed as well as the goods and/or services involved. This assessment is based on the overall impression given by those marks, account being taken, in particular, of their distinctive and dominant components. A low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa.

MHCS argued that a term “MOET” of opposed mark shall playa a dominant role as a source indicator since both “CLUB” and “KYOTO” are devoid of distinctive character in relation to restaurant service. If so, relevant consumers may misconceive “Moët & Chandon” from opposed mark when used on the service in question by taking its prestigious reputation of “Moët” as an abbreviation of world-famous champagne into consideration.

OPPOSITION DECISION

The JPO Opposition Board decided in favor of MHCS, finding that both “Moët & Chandon” and its abbreviation “Moët” have acquired substantial reputation as a top ranking champagne brand distributed by MHCS. It is unlikely that relevant consumers would conceive “Moët” as a surname of foreigners. If so, the term is anything but a dictionary word, rather a coined word. Besides, both marks are confusingly similar, due to visual, phonetic and conceptual similarities, since the literal elements “CLUB” and “KYOTO” of opposed mark are devoid of distinctive character in relation to the service in question, as well as close association between champagne and restaurant service for which protection was sought based on the fact that MHCS once opened restaurant in the year 2014.

Based on the above considerations, the Opposition Board cancelled trademark registration of opposed mark in its entirety, finding there to be likelihood of confusion between “Moët & Chandon” and the trademark applied for.
[Opposition case no. 2018-900152, Gazette issued date: October 25, 2019]

Rothschild Lost Trademark Opposition in Japan

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In a recent trademark opposition, the Opposition Board of the Japan Patent Office (JPO) dismissed an opposition filed by Baron Philippe de Rothschild S.A. (Rothschild) against trademark registration no. 6090508 for word mark “MOUTON” in relation to restaurant service due to unlikelihood of confusion with the fabled French winery “Château Mouton Rothschild”.
[Opposition case no. 2019-900012, Gazette issued date: September 7, 2019]

Opposed mark

Opposed mark, consisting of a word mark “MOUTON” in standard character, was filed in the name of Kabushiki Kaisha Waltz, a Japanese company deploying in business field of bars and restaurants.

The mark was filed to JPO on November 17, 2017. Going through substantive examination, JPO admitted registration in relation to “restaurant service” in class 43 and “wholesale and retail services for non-alcoholic beverages and foods” in class 35, and published for opposition on November 13, 2018.

Opposition by Rothschild

On January 15, 2019, Baron Philippe de Rothschild S.A. filed an opposition and argued opposed mark shall be revocable under Article 4(1)(vii) and 4(1)(xv) of the Japan Trademark Law by citing its wine brand “Château Mouton Rothschild”.

Article 4(1)(vii)

Article 4(1)(vii) prohibits any mark likely to offend public order and morals from registering.
Trademark Examination Guidelines set forth criteria for the article and examples.
Among others, “Trademarks whose registration is contrary to the order predetermined under the Trademark Act and is utterly unacceptable for lack of social reasonableness in the background to the filing of an application for trademark registration.”

Based on a remarkable degree of reputation and popularity to “Château Mouton Rothschild”, Rothschild asserted, applicant must have been aware of the wine brand and filed opposed mark with a malicious intention to take advantage of the reputation and credit of opponent’s famous trademark and impair the goodwill embodied on its brand.

Article 4(1)(xv)

Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.

Rothschild argued that opponent has used the mark “Château Mouton Rothschild”on wines from Pauillac in the Médoc region which became Premier Grand Cru in 1973, and thus part of a limited list since there are only 5 Premiers Grands Crus from the region. It is doubtless that “Château Mouton Rothschild” and its abbreviation “MOUTON” have acquired a remarkable degree of reputation and popularity as a source indicator of opponent wines. If so, relevant consumers and traders of restaurant service are likely to misconceive or associate opposed mark with famous wine brand of opponent.

Opposition decision

The Opposition Board admitted a certain degree of reputation and popularity to “Château Mouton Rothschild” as a source indicator of opponent among traders and wine lovers, however, questioned whether the wine brand has become famous among general consumers. Besides, from the produced evidences, the Board was not convinced that “MOUTON” has been known as an abbreviation of “Château Mouton Rothschild”.
In the assessment of the similarity between two marks, the Board found a low degree of similarity between opposed mark and “Château Mouton Rothschild” from visual, phonetic, and conceptual points of view. If so, even if wine and restaurant service are associated, it is unlikely that average consumers confuse or associate opposed mark with Rothschild.

Also, the Board found it was not foreseen a circumstance to offend public order and morals from registering opposed mark and give harmful effect to the international faith provided that “MOUTON” is a dictionary word meaning ‘processed sheepskin that has been sheared and dyed to resemble beaver or seal’.

Based on the foregoing, the Board concluded opposed mark shall not be revocable under Article 4(1)(vii) as well as (xv) and granted registration a status quo.

Calvin Klein defeated with trademark battle over “CK”

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Japan Patent Office (JPO) dismissed an opposition by Calvin Klein Trademark Trust, a well-known name in fashion, who claimed “CK” device mark is likely to cause confusion with Calvin Klein when used on various designated goods in class 16 and 21. [Opposition case no. 2019-900068]

Opposed mark

Opposed mark, TM Registration no. 6102531, was filed in the name of Crecia Kasuga Co., Ltd., having its head office in Fuji city located at the southern base of Mt. Fuji, on February 22, 2018.

Opposed mark, consisting of two alphabetical letters “CK” and a device looking like Mt. Fuji or paper roll (see below), designates toilet paper, tissue paper, kitchen paper and other paper products for home use in class 16 and cleaning tools and washing utensils in class 21.

JPO granted to register opposed mark and published for registration on December 25, 2018.

Opposition

On February 22, 2019, Calvin Klein Trademark Trust filed an opposition against the CK device mark.

Calvin Klein argued that opposed mark is subject to cancellation in violation of Article 4(1)(xv) of the Trademark Law on the grounds that “CK” and “ck” have acquired such fame as a source indicator of famous fashion brand “Calvin Klein” that, upon seeing the opposed mark used on goods in class 16 and 21, the average consumer would be led to infer the existence of a connection to the owner of the famous brand.

Board decision

The Opposition Board pointed out that, from the produced evidences, “CK” has been ordinarily used in conjunction with or adjacent to ‘Calvin Klein’ as well as “ck” and thus questioned whether “CK” and “ck” have become famous in itself as a source indicator of Calvin Klein among relevant traders and consumers at the time of both the application and the grant of registration of Opposed mark.

Besides, two alphabetical letters are deemed descriptive and unregistrable under the Japan Trademark Law. If so, unless opponent is successful in demonstrating acquired distinctiveness of “CK” or “ck”, a mere coincidence of two alphabetical letters is insufficient to find similarity between opposed mark and opponent’s marks.

Based on the foregoing, the Board concluded relevant traders and consumers are unlikely to confuse or associate the goods using opposed mark with opponent or any business entity economically or systematically connected with Calvin Klein. Therefore, opposed mark shall not be cancelled due to Article 4(1)(xv) of the Trademark Law.

Is “VEGAS” an abbreviation for Las Vegas, or a source indicator?

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In a trademark opposition disputing over abbreviation for ‘Las Vegas’, the Japan Patent Office (JPO) decided the term “VEGAS” shall be distinctive in connection with a service of providing amusement facilities (casino facilities, Pachinko parlors) of class 41.
[Opposition case no. 2018-900349, Gazette issue date: August 30, 2019]

VEGAS

Opposed mark is a word mark “VEGAS” in a plain gothic type.

The mark was filed in December 26, 2017 by a Japanese entertainment company, VEGASVEGAS Co., Ltd., headquartered in Tokyo, for various services in class 41 including providing casino (gambling) facilities, Pachinko parlors.

JPO, going through substantive examination, admitted registration (TM Registration no. 6080858) and published for opposition on October 9, 2018.

TRADEMARK OPPOSITION – Article 3(1)(iii)

On November 26, 2018, before the lapse of a two-months opposition period, DAIHACHI Co., Ltd. (d/b/a VEGAS GROUP), an amusement company, operating Pachinko & slot machine parlors in the name of VEGAS, filed an opposition, arguing that the word ‘VEGAS’ has been known among relevant consumers for an abbreviation for Las Vegas, the gamblers’ paradise, a trendy tourist destination, the entertainment capital of the world.

If so, it shall be forbidden to allow exclusive use of famous geographical indication by trademark right. Besides, consumers at the sight of opposed mark would establish a link between the geographical indication Las Vegas and “amusement facilities, casino (gambling) facilities and Pachinko parlors” and just conceive the facilities using opposed mark are connected with or equivalent to services available in Las Vegas Nevada (US).

Therefore, it is evident that opposed mark lacks distinctiveness in connection with the designated service of providing amusement facilities (casino facilities, Pachinko parlors) of class 41 and shall be revocable under Article 3(1)(iii) of the Trademark Law.

Article 3(1) of the Trademark Law is a provision to prohibit descriptive marks from registering.

Section (iii) of the article aims to remove any mark merely or directly suggesting quality of goods and services.

“Article 3(1)　Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:

(iii)　consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision;”

OPPOSITION DECISION

JPO Opposition Board totally dismissed the opposition by stating that:

  1. From the produced evidences, it is unclear whether ‘VEGAS’ becomes ordinary indication for Las Vegas in Nevada, US.
  2. The Board could not find circumstances and business practices related to the service in dispute that ‘VEGAS’ has been used to indicate a specific quality of the service or an association with Las Vegas at all.
  3. A mere fact that ‘VEGAS’ reminds consumers of Las Vegas is insufficient to negate distinctiveness of opposed mark in connection with the service in dispute.

Based on the foregoing, the JPO decided opposed mark shall play a part of source indicator over the service in class 41 and irrevocable under Article 3(1)(iii) of the Trademark Law.

Apple Inc. Defeated in Trademark case over the name ‘Mac’ in Japan

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The Opposition Board of Japan Patent Office (JPO) dismissed an opposition filed by the U.S. tech giant, Apple Inc. against trademark registration no. 5986073 for a word mark “Face2MAC” due to unlikelihood of confusion with Apple’s famous trademark “Mac”.
[Opposition case no. 2018-900002, Gazette issued date: May 31, 2019]

Opposed mark

Opposed mark, consisting of a word mark “Face2MAC” in standard character, was filed in the name of Allied Telesis Holdings K.K., a Japanese company deploying in business field of network devices and cyber securities.

The mark was filed to JPO on January 31, 2017 and admitted registration on October 6, 2017 over the goods of “computer software; telecommunication machines and apparatus; electronic machines and apparatus; network cameras” in class 9, and other services in class 37, 42 and 45.

Opposition by Apple Inc.

During a two-months opposition period after registration, Apple Inc. filed an opposition.

Apple argued that opposed mark “Face2MAC” shall be retroactively cancelled in violation of Article 4(1)(xv) of the Trademark Law since opposed mark contains (i) a famous trademark “Mac” of Apple Inc. and (ii) a term “Face” which reminds consumers of Apple’s well-known mark “FaceID” and “FACETIME”. If so, relevant consumers and traders are likely to confuse or misconceive opposed mark with Apple or any business entity systematically or economically connected with opponent.

Article 4(1)(xv)

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and users’ benefits.

Board decision

The Opposition Board did not question a remarkable degree of popularity and reputation of trademark “Mac” as an abbreviated source indicator of opponent’s personal computers ‘Macintosh’.

In the meantime, the Board considered both marks distinctively give rise to a different impression in the minds of relevant consumers from visual, phonetical and conceptual points of view. Besides, the Board emphasized the term “MAC” is commonly used as an abbreviation to indicate ‘Media Access Control’ in business field of computers and telecommunications. According to produced evidences by opponent, Apple Inc. has continuously used the mark “Mac” with a big ‘M’ and small letters ‘ac’, but not in a configuration of “MAC” at all. Therefore, it is rather presumed that relevant consumers at the sight of opposed mark shall conceive of media access control from “Face2MAC”, than Apple’s famous trademark.

Based on the foregoing, the Board concluded that relevant consumers of goods in question are unlikely to confuse opposed mark with Apple Inc. or any business entity systematically or economically connected with opponent.

Thus, opposed mark is not subject to Article 4(1)(x), and valid as a status quo.

POLO BCS defeated in trademark battle with POLO RALPH LAUREN

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In a ruling on the merits of whether or not an applied mark “POLO HOME / BRITISH COUNTRY SPIRIT” is likely to cause confusion with a world-famous trademark “POLO” by the fashion house Ralph Lauren, the Japan IP High Court sided with the JPO and ruled in favor of Ralph Lauren on December 10, 2018.

[Court case no. H30(Gyo-ke)10067]

 

“POLO HOME / BRITISH COUNTRY SPIRIT”

POLO BCS Co., Ltd., plaintiff of the case, is a Japanese business entity, promoting apparel products bearing trademarks of “POLO BRITISH COUNTRY SPIRIT”, “POLO BCS”, and “POLO HOME”.

 

POLO BCS filed a trademark registration for the mark “POLO HOME / BRITISH COUNTRY SPIRIT” as shown in below on January 5, 2015 by designating clothing and other goods in class 25. [TM application no. 2015-305]

 

In fact, POLO BCS, a registrant of the word mark “POLO” on class 25 in Japan since 1997 (TM registration no. 1434359 and 2721189), granted trademark license to Ralph Lauren in the year of 1987 and since then continuously allows RL to use the mark “POLO” in Japan.

 

JPO decision

The Japan Patent Office (JPO) rejected the applied mark based on Article 4(1)(xv) of the Trademark Law on June 3, 2016. The refusal relies on a prominent portion of the mark “POLO” is likely to cause confusion with RALPH LAUREN when used on apparel products, being that “POLO” becomes remarkably well-known for an abbreviation of POLO RALPH LAUREN among relevant consumers with an ordinary care.

Article 4(1)(xv) is a provision to prohibit any mark from being registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and users’ benefits.

POLO BCS filed an appeal against the refusal on August 16, 2016, but its attempt resulted in failure [Appeal case no. 2016-12344].
To contest the JPO decision, POLO BCS appealed to the IP High Court filed immediately.

 

IP High Court decision

The court admitted a high degree of reputation and popularity of Ralph Lauren and “POLO” as an abbreviation of Polo Ralph Lauren in connection with apparel products by taking account of following fact findings.

  1. The first collection for Polo brand was launched in the US by a designer Mr. Ralph Lauren in 1967.
  2. Annual sales of Ralph Lauren exceed 7 billion USD in 2013 around the globe.
  3. In 1976, Ralph Lauren launched Polo brand and shops in Japan.
  4. According to brand perception survey of 900 randomly selected Japanese consumers ages 20 to 69 conducted in 2010, 81.8% of consumers recognize Ralph Lauren.
  5. Annual sales of 26.7 billion JPY in Japan (fiscal year 2008) accounts for 6% of global sales of Ralph Lauren.

 

Besides, the court found close similarity between applied mark and “POLO” by Ralph Lauren given a tiny font size of “BRITISH COUNTRY SPIRIT” in the configuration of applied mark and less distinctiveness of the word “HOME” in relation to apparel for home use.

Plaintiff argued to consider the fact that RL has used the “POLO” mark in Japan under license from plaintiff. But the court negated the argument stating that such fact would not mean consumers recognize the mark as a source indicator of plaintiff. In addition, plaintiff argued originality and fame of the word “POLO” as a source indicator of Ralph Lauren by citing Polo Game, organizations for the game, e.g. US POLO ASSOCIATION, HURLINGHAM POLO, and a generic name of Polo shirts. Court considered such circumstances would mean less originality of the mark “POLO”, but never deny fame of the mark as a source indicator of Ralph Lauren as long as consumers doubtlessly connect it with Ralph Lauren.

Based on the foregoing, the IP High Court concluded it is obvious that relevant consumers are likely to confuse or misconceive a source of the applied mark with Ralph Lauren or any entity systematically or economically connected with RL when used on clothing in class 25.